Friday, January 14, 2011

As I mentioned before in connection with my recent post on the URS, ICANN’s proposed Final Applicant Guidebook remains largely unchanged from the Draft Applicant Guidebook volume 4, at least in connection with the Trademark Clearinghouse. As you may recall, the DAG volume 4 created a bifurcated trademark protection scheme based on whether the registry chose to use a IP Claims Service or a Sunrise Registration Process. The broader IP Claims Service would protect “nationally or multi-nationally registered” word marks, whether or not those marks were registered in a jurisdiction that conducts “substantive review.” The narrower Sunrise Registration Process, however, would only protect those word marks “registered in a jurisdiction that conducts substantive examination of trademark applications prior to registration,” along with those marks validated by the Trademark Clearinghouse.

This “substantive review” requirement created a stir in the IP community, due to the vagueness of the terms and thereby lack of definition. The Board’s meeting in Trondheim spelled out both the definition of “substantive review” in connection with trademark registration jurisdictions, as well as the “substantive review” provided by the validation function of the Trademark Clearinghouse for those registries that choose to use a Sunrise Registration Process.

Substantive evaluation upon trademark registration has essentially three requirements:
(i) evaluation on absolute grounds - to ensure that the applied for mark can in fact serve as a trademark;
(ii) evaluation on relative grounds - to determine if previously filed marks preclude the registration; and
(iii) evaluation of use - to ensure that the applied for mark is in current use.

The only change from the language from the Trondheim meeting and the language included in the proposed Final Applicant Guidebook is the substitution of the word “evaluation” for the term “review” in relation to the validation services of the Trademark Clearinghouse, such that the proposed Final Applicant Guidebook reads, “Substantive evaluation by Trademark Clearinghouse validation service provider shall require …” As was the case with the DAG volume 4, the Trademark Clearinghouse is tasked with developing and publishing a list of the jurisdictions that conduct “substantive review” of trademarks upon registration.

First, there is the issue of consistency of language that may be creating confusion with regard to the new language in the proposed Final Applicant Guidebook, specifically the incorporation of “evaluation” services provided by the Trademark Clearinghouse. As can be seen in the red line version of the proposed Final Applicant Guidebook, the word “examination” has been deleted in connection with Section 7.1.3 and the term “evaluation” has been substituted. ICANN removed the term “evaluation” from the only other use of the term in the Trademark Clearinghouse in the proposed Final Applicant Guidebook as well, so, presumably, the Trademark Clearinghouse is no longer set up to examine. The problem is that “evaluation” is only used in connection with Section 7, “Protection for Marks in Clearinghouse” and not in relation to any of the other sections. Moreover, as I mentioned before Section 7.1.4 states, “Substantive evaluation by Trademark Clearinghouse validation service provider shall require …” despite the fact that this is the only section in which the Trademark Clearinghouse provides evaluation services rather than validation services. Thus, the language of Section 7.1.4 should be changed for the sake of internally consistent language to “Validation by Trademark Clearinghouse service provider shall require: (i) evaluation on absolute grounds; and (ii) evaluation of use.”

Second, Section 3, “Criteria for Trademark Inclusion in Clearinghouse,” lists proposed standards for inclusion, including standards for registered marks, judicially validated marks and marks protected by statue or treaty, but does not include standards for marks validated by the Trademark Clearinghouse. Those standards show up in Section 5, “Data Authentication and Validation Guidelines,” which references Trademark Clearinghouse validated marks and requires the mark holder to “provide evidence of continuous use of the mark in connection with the bona fide offering for sale of goods or services prior to application for inclusion in the Clearinghouse” and also offers examples of possible evidence of such use. I am not sure the relevance of including section 5.2, but it would seem to fit better into the Trademark Clearinghouse scheme under Section 3. And the language in Section 5, which, again, is titled “Data Authentication and Validation Guidelines.” supports my suggestion for a change to Section 7.1.4 since, presumably, these sections are intended to be read together in connection with validation services conducted by the Trademark Clearinghouse.

In any event, perhaps this is all an exercise proving that I am not seeing the forest for the trees. So, what do these new definitions mean for trademark holders? Outside of the important details outlined in Antony’s comment related to my previous post on the Trademark Clearinghouse below, it means that a trademark owner should be able to include its trademark registration in the Trademark Clearinghouse, whether or not the trademark was registered in a jurisdiction that provides substantive review, provided the trademark owner can submit evidence of registration and proof of use of the mark in connection with a bona fide offering of goods or services prior to the trademark owner’s application to the Trademark Clearinghouse. So most trademark holders should be able to register their word marks on the Trademark Clearinghouse.

What protection does registration on the Trademark Clearinghouse afford? The short answer to that question is that a domain name registrant in a generic new top-level domain who registers a domain name that identically matches a mark listed in the Trademark Clearinghouse will receive notification of that match in the form included with the proposed Final Applicant Guidebook. The language of said notice is clearly intended not to create a chilling effect for the domain name registrant, outlining the fact that the registrant may or may not be “entitled” to register the domain name. Nevertheless, the notice may be of more benefit to trademark holders if it could serve the function of a typical cease-and-desist letter without being overbearing. That could save trademark owners the costs of feeling the need to follow up with more substantial correspondence subsequent to the notification. Even if one sentence were inserted, such as “Your registration and/or use of this domain name may violate the trademark holder’s rights and may constitute trademark infringement, trademark dilution and/or unfair competition.” Such a statement would also likely be something the domain name registrant might want to be aware of as well.

I have used this blog largely to discuss the issues related to dispute resolution subsequent to the implementation of new TLDs and next week I would like to discuss what might happen leading up to that point over the next year or so. At least, I hope to.

Tuesday, December 28, 2010

I love blogs. More specifically, I love blogs that are frequently updated and well written. This blog is not where I would like it to be since I have not been posting here regularly. Whether the content is any good is not for me to decide, but I would like to write here more frequently. Alas, perhaps my blogging in 2011 will be more fruitful.

As I mentioned in my previous post, ICANN released the latest version of the DAG and is referring to it as the Final Applicant Guidebook. The public comment period was extended to January 15th at the last meeting in Cartagena. There are comparatively fewer changes to this version than previous DAGs and for purposes of clarity I will cover those in the same order of the original posts on this blog, starting with the URS. As you may recall, previous posts discussed the form of the complaint, the time line, the standard of review, and default and appeal.

Form of Complaint

As I discussed before, the IRT originally proposed a form URS complaint consisting of check boxes and limited space for comments and this aspect of the URS was rejected by the STI. The DAG subsequently instituted a 5000 word limit, excluding attachments, for the complaint and this remains the same in the Final AGB. I argued before that, if a simple check box form is not sufficient for some (eBay’s VeRO Program with its NOCI form could have been an example to follow.), then the word limit for a URS complaint should be reduced to save on legal costs, whether external or internal to the trademark holder, particularly since the URS is specifically intended to remedy clear cut cases of trademark abuse. If the difference in costs to the trademark owner is simply the difference in the filing fees between the UDRP and the URS, trademark owners may very well decide to file complaints under the UDRP instead of the URS, since the UDRP provides transfer or cancellation of the domain name, rather than suspension of the disputed domain.

Moreover, the fees associated with filing a complaint under the URS is suggested by ICANN to be $300 or about $1000 less than a filing under the UDRP for a complaint concerning one domain name. The $300 fee will likely be divided between the URS Provider and the Examiner in some proportion, but the fee structure does not leave much for either. How will a URS Provider process a sufficient volume of complaints to justify handling of such disputes? And how will the Examiners, who are supposed to have “legal background” and “trained and certified in URS proceedings,” supposed to make a determination on a lengthy complaint and, potentially, a lengthy response for something less than $300? Paragraph 7.3 of the Final AGB discusses the rotation of Examiners to discourage forum shopping, but I wonder how many forums will be interested in administering the URS under the rules as currently stated in the Final AGB.

Time Line

The Final AGB reduces the response period under the URS from 20 days to 14 days, which was the original recommendation from the IRT. As I suggested in my post in connection with the time line below, the result is a process that should take only 23 days. The URS Provider has three days upon receipt of the complaint to conduct an administrative review and then the URS Provider must notify the registry within 24 hours from the time the complaint is deemed compliant. The registry then has 24 hours to “lock” the domain name and notify the URS Provider of the locking of the domain name. The URS Provider then has 24 hours to notify the registrant of the complaint, a time line of six days. Next the registrant has 14 days from the notice of complaint to file a response. Upon conclusion of the response period or, alternatively, the receipt of a response, the URS Provider has a “stated goal” of three business days to issue a determination of the dispute, for a grand total of 23 days. The Final AGB provides for a “limited extension of time to respond … if there is a good faith basis for doing so” to be determined by the URS Provider, but, in any event, no more than seven calendar days. Furthermore, the URS Provider may issue a decision in the dispute in 14 days, rather than the “stated goal” of three business days, but no longer “[a]bsent extraordinary circumstances.” Should a URS dispute arise in which the registrant was granted a seven-day extension and the Examiner required the full 14 days to issue a decision, the total would then be 41 days from the filing of the complaint to the issuance of the decision.

Standard of Review

The standard of review remains largely unchanged with only the deletion of a reference to the fact that the standard is higher under than the URS than the UDRP, because the URS is only intended for “the most clear cut blatant case of infringing conduct.”

Default and Appeal

The rules for default and appeal under the URS also remain largely unchanged, although the time limits have been reduced from 20 days to 14 days.

Conclusion

Since the ICANN Board has signaled that the trademark protection issues for the expansion of new top-level domains have been resolved, it is likely this form of the URS will be one of the tools for trademark owners to use to protect their rights. I maintain that the biggest issue for trademark owners will be the internal or external costs that will be required to devote to a lengthy URS complaint. Will trademark owners and their representatives use this new dispute resolution policy or will the limited cost savings in filing fees persuade them to stick with the UDRP? And will the minimal filing fees dissuade entities from applying to become URS providers and/or qualified applicants from becoming URS Examiners? We shall see.

Friday, November 19, 2010

First off, last week ICANN posted its proposed Final Draft Applicant Guidebook for a 30-day public comment period leading up to the next ICANN meeting in Cartagena. This post still concerns the prior DAG, but I already had nearly 1000 words devoted to this post. So I’m publishing this anyway. I will follow up with a post on the latest version in the near future, but the short summary is there is not a lot that has changed.

The GPML was just a portion of the Clearinghouse in the IRT’s Final Report, which also included the Pre-Launch IP Claims Service and a Sunrise Registration Process. The IRT Final Report recognized that “trademark owners face a much larger threat at the second level that at the first level,” and therefore recommended a “two-pronged approach at the second level,” one for GPMs and one for “all other marks that are the subject of trademark registrations of national effect.” Since the GPML remains unlikely to come to fruition, the Pre-Launch IP Claims Service and the Sunrise Registration Process are the topic of this post.

Under the IP Claims Service proposed by the IRT, the registry of the new top-level domain is required to provide notification to the potential registrant of a domain name that identically matches a trademark listed on the Clearinghouse and the owner of said trademark. As opposed to the trademarks listed on the GPML, the other trademarks listed in the Clearinghouse would not prevent a potential registrant from registering a domain name identical to a listed trademark, provided the potential registrant:

(i) affirmatively opts into the registration of the domain name after receiving notice; (ii) represents and warrants that it has a right or legitimate interest in that domain name; (iii) represents and warrants that it will not use the domain name in bad faith as described in the UDRP; (iv) acknowledges that the registration or use of the domain name in bad faith may result in suspension under the URS, a UDRP proceeding, and/or judicial action by the appropriate trademark owner; and (v) represents and warrants that the registrant contact information provided in support of the domain name registration is valid and accurate, and acknowledges that provision of false information may result in cancellation of the registration.

The final IRT Report also provided the alternative of a “Sunrise Registration Process in lieu of” the IP Claims Service, based on Sunrise Eligibility Requirements (SERs) verified by the Trademark Clearinghouse and a Sunrise Dispute Resolution Policy (SDRP) to protect against applied-for domain names identical to domain names listed in the clearinghouse.

The STI asserted that “[n]ew gTLD registries should provide equal protection to all trademarks in the [Trademark Clearinghouse] for their RPMs, except as follows: (i) Inclusion of a trademark in the Trademark Clearinghouse from a country where there is no substantive review does not necessarily mean that a new gTLD Registry must include those trademarks in a Sunrise or IP Claims Process.” The STI inserted the “substantive review” language due to concerns that, without this substantive review requirement, some domain name registrants seeking to register domain names incorporating generic terms could abuse the Sunrise process by first registering trademarks in the Benelux and other countries, such as what happened with some .eu domains.

In the latest version of the DAG, ICANN has proposed the IRT’s option for registries of new top-level domains to protect trademark holders’ rights: either an IP Claims Service or a Sunrise Registration Process, but the two policies protect trademark registrations differently, as recommended by the STI.

The policy related to the IP Claims Service is broader: “Registries must recognize all text marks that have been or are: (i) nationally or multi-nationally registered (regardless of whether the country of registration conducts a substantive review; (ii) court-validated; or (iii) protected by a statute or treaty currently in effect and that was in effect on or before 26 June 2008.”

The policy related to the Sunrise Registration Process is narrower: “Registries must recognize all text marks: (i) nationally or multi-nationally registered in a jurisdiction that conducts substantive examination of trademark applications prior to registration; or (ii) that have been court- or Trademark Clearinghouse validated; or (iii) that are protected by a statute or treaty currently in effect and that was in effect on or before 26 June 2008.”

ICANN noted that the bifurcation in the pre-launch services was intended to address the goal of the model in the STI, “as well as those that are concerned that marks in non-substantive review countries can simply be excluded by registries from pre-launch Sunrise or Trademark Claim services.”

Therefore, all nationally or multi-nationally registered trademarks should be protected by registries using an IP Claims service, but only those trademarks registered in jurisdictions that conduct a substantive examination prior to registration are covered for registries using a Sunrise Registration Process. This substantive review requirement created quite a stir in the trademark community, but the Sunrise Registration Process also covers trademarks validated by the Trademark Clearinghouse itself. And the proposed Final Draft Applicant Guidebook provides additional definition of what these terms mean. We’ll get to that next.

Friday, October 1, 2010

Along with the URS, the IRT’s Final Report also recommended the adoption of rights protection mechanisms (RPMs) such as the IP Clearinghouse, later renamed the Trademark Clearinghouse, which included the Globally Protected Marks List (GPML) as a “tapestry of solutions” for protecting the rights of trademark owners.

To qualify for the GPML, a trademark owner would be required to submit evidence to the Trademark Clearinghouse showing ownership of trademark registrations in a certain number of countries across all five ICANN regions, including North America, Europe, Africa, Asia/Australia/Pacific and Latin America/Caribbean. The IRT refrained from specifying the exact number of required registrations and instead requested that ICANN staff to collect “relevant trademark registration data.” The IRT did emphasize that the registration thresholds “must be sufficiently high such that the marks that qualify for the GPML are actually recognized as globally protected.”

A trademark owner that registers its trademark on the GPML would benefit by, at least initially, blocking the registration of both top-level domains and second-level domains identical to the trademark by third parties. Such prevention of registration would be a boon to trademark owners that qualify for the GPML because those trademark owners would not need to register defensively in any of the new TLDs.

Unfortunately, the GPML never gained traction and was not included in volume four of the DAG. Moreover, in the Board resolutions referenced yesterday, the reasons for the exclusion of the GPML were listed as follows: “it is difficult to develop objective global standards for determining which marks would be included on such a GPML, such a list arguably would create new rights not based in law for those trademark holders, and it would create only marginal benefits because it would apply only to a small number of names and only for identical matches of those names.”

The first listed reason is understandable, as creating criteria all relevant parties agree to would be nigh impossible. The third listed reason is debatable. I have no doubt that trademark owners owning globally recognized brands would certainly not view the benefits of not having to register defensively in a slough of new TLDs as “marginal.” The second listed reason is the one I have heard the most frequently, as there appeared to be a concern that the RPMs would create new rights for trademark owners. And I wonder if the GPML didn’t suffer from its name signifying that trademarks on such a list would be protected globally. If the GPML would have instead been called the Names Overwhelmed by Squatters List or NOs List (As in, “Can I register this?” “I’m sorry that name is on the NOs List.” Clever?), would the outcome have been different? Who knows, but I think it’s safe to say the GPML is dead. We’ll move on to the remainder of the Trademark Clearinghouse next week.

Thursday, September 30, 2010

Sorry for the delay with regard to entries connected with the Trademark Clearinghouse and the dispute resolution policies for new top-level domains. Both personal and professional issues have consumed me such that taking the time to post on this blog has proven impossible. I should be up to speed now with a post soon with regard to the Trademark Clearinghouse, hopefully tomorrow.

Nevertheless, ICANN’s board retreat has concluded and the adopted board resolutions are available here. Relevant to the posts on this blog thus far are the resolutions under the subhead “Trademark Protection.” As you can see, the Board has reduced the time a domain registrant faced with a URS complaint has to respond from 20 days to 14 days, which dovetails with the time line outlined in the Final Report issued by the IRT. As I wrote below, the time to respond to the complaint was the primary difference between the URS time line outlined in the DAG and the URS time line outlined by the IRT.

The reduced time line will benefit trademark owners who file complaints under the URS, but I still believe that the primary problem with the URS is the word count limit. Trademark owners may gain a week under the next edition of the DAG, but the primary costs associated with filing a URS will remain the same, and will be largely the same as the external legal fees or internal opportunity costs as those associated with the UDRP, which provides a stronger remedy than the URS. If the check box forms proposed by the IRT are a non-starter, then the word count limit should be sharply reduced to 1000 words, as six fewer days is unlikely to encourage trademark owners to use the URS over the UDRP.

Tuesday, August 17, 2010

Over the last two weeks, I have discussed the URS in connection with the original proposal of the IRT and the most-recent proposal in the DAG volume four. I have posted separately in relation to the form of the complaint, the time line, the standard of review, and the issues of default and appeal. I intend to combine these postings in the form of a white paper to be available to trademark owners or others interested in such issues that may be used as reference related to ICANN’s September Board retreat and the next public meeting in Cartagena, Colombia in December, where we may very well see a final DAG.

Are the issues with the URS outlined above worthy of nearly 3000 words and counting? Arguably not. But the major concerns for trademark owners are in connection with the scale of the implementation of new TLDs, as in potentially hundreds of new strings, each one of which could pose multiple concerns for trademark owners, who are required by law to enforce said rights or risk losing them. These concerns directly conflict with those who simply want new TLDs to move forward to some form of time line. It’s clear to me that those on both sides of this issue have worked hard to find common ground and the URS reflects those efforts on both sides.

While it does not appear that the URS time line, or the process of default and appeal differ significantly in the latest DAG from those proposed by the IRT, the form of the complaint and the standard of review still require amendment. With regard to the form of the complaint, the STI unanimously rejected the use of a standard form with check boxes. But the current 5,000-word limit leaves little reason for trademark owners to use the URS rather than the UDRP, with an equivalent word count and a stronger remedy. If check boxes are a none-starter, for whatever reason, the word count limit needs to be significantly reduced to encourage trademark owners to choose the URS over the UDRP. Since the URS is only intended as a remedy for clear cut cases of trademark abuse, a 1,000 word limit should prove sufficient to prove such a case, and alleviate the internal and/or external costs to trademark owners.

Similarly, the standard of review should be returned to the clear and convincing evidence test as proposed by the IRT. The language added to the IRT does not add anything to the strong test supported by the IRT and, in fact, adds language that does not fit with the stated goals of the URS or the UDRP. Further, the “defense would have been possible” language is so vague as to be meaningless. Domain name registrants should be protected from unscrupulous URS complaint, but the URS is only intended for clear cut cases and the known and understood clear and convincing evidence test properly fits such cases.

That’s it for the URS. If you would like a copy in the form of a white paper, feel free to e-mail me at Ryan@KaatzLaw.com for a PDF copy. The newest posts over the next couple weeks will be related to the Trademark Clearinghouse and both the PDDRP and the RRDRP.

Monday, August 16, 2010

This will be my final substantive post related to the URS, so it is fitting that the issue is finality. I will then post some general conclusions. The IRT report states, “[s]hould a Registrant find their domain name has been taken down after the fourteen (14)-day Answer period has passed and wishes to file a legitimate Answer to the Complainant, The Registrant may file a Default Answer to the third-party dispute provider at any time during the life of the domain name registration.”

In the public comments section of the most-recent DAG, trademark owners and those representative of trademark owners have contended that the URS is uncertain for trademark owners. In fact, the letters from Com Laude and Marques-ECTA both assert that, in the current draft of the DAG, the “[d]efaulting respondent can apply for de novo panel review for up to two years,” as opposed to the original proposal from the IRT, which only allowed for “[r]econsideration by Ombudsman or appeal to relevant court.”

But the IRT proposal for the URS specifically included a provision for the possibility that a Registrant to file a Default Answer subsequent to a finding against the Registrant under the URS, completely outside of the appeal process. Moreover, even if a losing Registrant filed a Default Answer, the time line related to the issuance of decision from the Examiner would begin to run, meaning a decision would likely be rendered within three business days and, at most, 14 business days. Finally, there have been remarkably few appeals of decisions related to abusive domain name registrations throughout the history of the UDRP. Although the DAG contemplates an appeal process, the nature of that process is left to the purview of the dispute resolution providers, ignoring the IRT’s recommendation of an Ombudsman and the STI’s recommendation to provide three-member panels on appeal. It will be interesting to see if the dispute resolution providers who contract with ICANN to provide URS services will include an appeal process and what the process may be.